January 19, 2010

Federal Circuit Broadens Claim Construction & Vacates Grant of Summary Judgment of Noninfringement

Schindler Elevator Corp. v. Otis Elevator Co., No. 2009-1146 (Fed. Cir. Jan. 15, 2010) (Linn, Friedman, and Dyk (concurring in result and dissenting in part))

Federal Circuit vacated district court’s grant of summary judgment of noninfringement and remanded for further proceedings in accordance with its broadened claim construction.  The district court’s construction of “information transmitter” and “recognition device” was found too narrow in light of the claim language, specification, and prosecution history. 

Schindler appealed the district court’s grant of summary judgment, in favor of Otis, of noninfringement of U.S. Patent No. 5,689,094, which is directed to an elevator system including a “recognition device” that detects a user’s “information transmitter” when he/she enters a building and then dispatches an elevator to bring the user to a destination floor based on user-specific data.  Otis’s accused device requires that a user position his/her RFID card in close proximity to a reader on a lobby security turnstile, which reads the card.  An elevator is dispatched for the user and its number is displayed on the turnstile. 

The district court construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  It construed “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.”  “[W]ithout…personal action” was defined such that an accused device would not infringe if it required “any and all types of personal action,” other than simply “walking into the monitored area.”

Otis argued that its device did not infringe because it required “personal action” – passengers must use their hands to bring their card within the 3.5-inch range of the reader.  The district court agreed and granted summary judgment in its favor. 

The Federal Circuit held that the construction was too narrow – it struck “without requiring any sort of personal action by the passenger” from each construction and remanded.  It reached this conclusion after examining the claim language, specification, and prosecution history. 

Claim language:  Claim 1 requires that the transmitter be “carried by an elevator user” – a type of “personal action.”  Dependent Claim 7 recites that the information transmitter can include a building key actuated by a recognition device mounted near a “door lock” or a “time clock,” which would require the user to use his/her hands to bring the transmitter within the range of the recognition device.  Thus, the Federal Circuit concluded that the “claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device.”

Specification:  The term “personal action” was used only once in the specification – to explain that personal action is not required to communicate with the elevator control, not to refer to transport of the transmitter to within recognition range.  This communication was also described using the terms “hands-free,” “automatic,” and “contactless.”  The specification described a number of “personal actions” that may be used to bring the transmitter within range, such as pushing a cart with the transmitter mounted thereto and the “key” embodiment of Claim 7. 

Prosecution history:  In distinguishing the prior art, which disclosed manual operation of a transmitter by pressing buttons, Schindler described its invention as operating “automatically, contactlessly, and independently of the orientation of the information transmitter.”  The Federal Circuit held that these terms modify actions that take place only after the passenger has brought the transmitter within range of the recognition device.  It disagreed with the district court’s conclusion that Schindler disavowed the use of a passenger’s hands for any and all purposes and held that Schindler’s prosecution statements did not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device. 

Dyk:  Concurring in the result and dissenting in part

Judge Dyk agreed that “without requiring any sort of personal action” unduly limited the scope of the claims.  But he disagreed with the majority’s interpretation of Claim 1, believing it to be too broad and not giving effect to Schindler’s disclaimer of devices that are not “hands-free” and “automatic.”  Dyk rejected the majority’s distinction between actions taken within the range of, versus outside the range of, the recognition device, finding the distinction not supported by the specification or prosecution history.  He thought that the majority should have only relied on Claim 7, which covers using a card to enter a building and simultaneously transmit user elevator data, to find that the claim limitations were satisfied by the Otis device because using the building key to call the elevator requires no additional personal action.